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Mass Engineered Design Inc. v. Planar Systems Inc.

United States District Court, D. Oregon

July 6, 2018


          John Mansfield, Harris Bricken, LLP, John J. Edmonds, Stephen F. Schlather, Shea N. Palavan, Brandon G. Moore, and Eric R. Carr, Collins Edmonds & Schlather, PLLC, Attorneys for Plaintiff.

          Jacob S. Gill, Stoll Stoll Berne Lokting & Shlachter, PC, Jenny W. Chen, Chen IP Law Group, Andrew T. Oliver, Amin, Turocy & Watson, LLP Attorneys for Defendant.



         Plaintiff, Mass. Engineered Design, Inc. (“Mass”), brings this lawsuit against Defendant, Planar Systems, Inc. (“Planar”), alleging infringement of U.S. Patent No. RE36, 978 (the “978 Patent”) and U.S. Patent No. 8, 102, 331 (the “331 Patent”). A jury trial was held, beginning April 24, 2018, and ending May 8, 2018. The jury found that Planar was liable for direct infringement, active inducement, and as a contributory infringer and that neither the 978 Patent nor the 331 Patent were invalid. The jury then awarded Mass. money damages in the total amount of $1, 150, 000. The jury, however, was unable to reach a unanimous verdict on the question of whether Planar's infringement was willful. The Court declared a mistrial only on that question, and otherwise accepted the jury's verdict. The Court then scheduled a new jury trial solely on the question of willfulness. A two-day jury trial is scheduled to begin on Monday, July 9, 2018, at 10:00 a.m., that will address only the question of willfulness. In anticipation of this second jury trial, the parties have filed various pretrial motions, objections, and related matters. This Opinion and Order addresses the parties' pending pretrial motions, objections, and other pretrial matters. Finally, after the jury trial on “willfulness” concludes, the Court will conduct a one-day bench trial on Planar's defense of “inequitable conduct.”

         1. Strict Time Limits to be Observed at Trial

         During the telephone status conference held on June 4, 2018, the parties agreed to the following time limits, which the Court will enforce: each party is allowed 20 minutes for opening statement, three hours for all witness testimony (i.e., direct, cross, redirect, and re-cross examinations), and 30 minutes for closing argument. ECF 320. These time limits, however, do not include jury selection or the Court's instructions to the jury. The Court finds these time limits are reasonable. See Navellier v. Sletten, 262 F.3d 923, 941 (9th Cir. 2001) (“Trial courts have broad authority to impose reasonable time limits. Such limits are useful to prevent undue delay, waste of time, or needless presentation of cumulative evidence. While trial courts have discretion to expedite the completion of trials, they must not adhere so rigidly to time limits as to sacrifice justice in the name of efficiency.”) (quotation marks and citations omitted).

         The Court will monitor the parties' time “chess clock style, ” with each party's time beginning when counsel starts an examination segment (e.g., direct, cross, redirect, or re-cross) and ending when counsel concludes that segment. The Court will inform the parties of their consumed and remaining times at the conclusion of each trial day, or more often upon request.

         2. Planar's Motions in Limine (ECF 361)

         a. Motion No. 1: Exclude certain witness testimony


         Planar moves to exclude “testimony by irrelevant witnesses.” Planar objects to five witnesses. Regarding those witnesses for whom the Court has overruled Planar's motion in limine, Planar may object at trial to any specific question or answer, if Planar believes the question or answer is improper under the rules of evidence or any of the Court's rulings.

         i. Jerry Moscovitch - DENIED

         Planar objects that Mr. Moscovitch should not be allowed to testify at all at the second trial (i.e., the “willfulness trial”). This objection is overruled. At the first trial, the Court ruled that Mr. Moscovitch would not be allowed to testify regarding willfulness because Mass's initial witness statement disclosures did not include willfulness as a topic of Mr. Moscivitch's testimony. During the first jury trial, however, Mr. Moscovitch testified regarding a meeting that took place in 2007 between Mr. Moscovitch and Planar relating to Mr. Moscovitch's patented products. Emails relating to that meeting were then located and produced. Those emails were between Planar employees and Mr. Moscovitch. In lieu of introducing those emails into evidence, the parties agreed at the first trial to a stipulation that was included in the jury instructions. Planar objects to including that same stipulation in the jury instructions in the second trial. Accordingly, the Court will not inform the jury of that earlier stipulation.

         The Court, however, will allow Mr. Moscovitch to testify about the 2007 meeting and the related emails. In addition, the Court will allow these emails and other related documents to be received in evidence, if a proper foundation is provided at trial and these documents do not otherwise contain objectionable material. The 2007 meeting and related emails are relevant to when Planar first became aware of Mass's patent and to Mass's theory that Planar was allegedly involved in the copying of Mass's product.

         Although the burden is on Mass. to offer evidence that this meeting in 2007 is connected to Planar's requesting HighGrade to copy Ergotron's product that infringed on Mass's product, the Court is satisfied that as a result of and subsequent to the original trial, Planar has had sufficient notice of the meeting, Mr. Moscovitch's testimony, and the emails for the introduction of this evidence, including Mr. Moscovitch's testimony, not to be unfairly prejudicial. The Court also notes that during a June 4, 2018 telephone status conference, the Court stated that it would allow Mr. Moscovitch to testify during the second trial on the same matters to which he testified in the first trial. Thus, there is no unfair surprise to Planar. See ECF 320 and 356. Mr. Moscovitch, however, may not offer testimony in which he speculates about Planar's “state of mind.”

         Moreover, as a condition of the Mr. Moscovitch being allowed to testify on these topics, the Court will allow Planar, if it chooses, to take the deposition of Mr. Moscovitch, not to exceed two hours, before the jury trial commences on Monday, July 9th. This deposition may only cover the topics of the 2007 meeting, the related documents, and the alleged copying of Mass's products. Upon request by Planar, Mass. shall make Mr. Moscovitch available for such a deposition on Saturday (July 7th), Sunday (July 8th), or early Monday morning (July 9th), at a time and place mutually convenient to the parties.

         ii. Walter Bratic - GRANTED

         iii. John Akin - RESERVED

         Mass asserts that Dr. Akin will not be called in the jury trial and will only be called as a rebuttal witness to Dr. Yee in the bench trial on the issue in inequitable conduct, if Dr. Yee testifies. Because at this time it is not known whether Dr. Yee will testify at the bench trial, the Court reserves ruling on Planar's objection to Dr. Akin.

         iv. Peter Heuser - GRANTED

         v. Ming-Hsien Huang - DENIED

         Planar objects that Mr. Huang should not be allowed to testify regarding “copying” because the only copying that is relevant would be copying by Planar. Mr. Huang, however, is the founder of HighGrade Tech. Co., Ltd. (“HighGrade”). HighGrade is a supplier to Planar for the products at issue in this case. According to Planar, neither HighGrade nor Mr. Huang is an agent or employee of Planar.

         The theory propounded by Mass, however, is that Planar sent HighGrade a product made by Ergotron, Inc. (“Ergotron”) that infringed Mass's patents and Planar asked HighGrade to design a product similar to Ergotron's infringing products, along with providing HighGrade specifications that Planar knew or should have known also would infringe Mass's patents. Thus, the fact that HighGrade was the entity doing the “copying” is not necessarily dispositive on the issue of relevance, if Mass. provides evidence that HighGrade did so at Planar's request or direction. The assertion by counsel for Planar that there is no such evidence is an insufficient basis on which to grant a motion in limine. If it is a correct assertion, however, it may support the Court granting a directed verdict or otherwise excluding Mr. Huang's testimony or instructing the jury to disregard it.

         b. Motion No. 2: Preclude Mr. Moscovitch from Testifying at the Willfulness Trial - DENIED

         This is a primarily a duplicate of the motion above and the Court's discussion in Section 2(a)(i) is incorporated by this reference. Additionally, Planar objects to Mr. Moscovitch testifying to: (1) dates of notice of infringement and dismissal of the first lawsuit against Planar; (2) Mass's reasons for dismissing the first lawsuit; (3) the alleged 2007 meeting between Mass. and Planar; and (4) alleged copying of Mass's products by Ergotron. Planar's first objection is that willfulness only involves facts Planar knew or had reason to know and thus no other facts can be included in the trial. The Court disagrees. Although Planar is correct that for a finding of willfulness by the infringer, only the facts known or that should have been known by the infringer may be considered, but a trial is not held in a vacuum. Having some understanding of what was happening at the time, such as why the first lawsuit was voluntarily dismissed by Mass, gives the jury context in which it can better understand the full picture in order to focus on the facts relevant to the question of willfulness. If a jury is distracted or confused about facts that would seem quite important (such as why a company would dismiss a lawsuit and then bring it again a few years later), that is not a fair or efficient trial. The Court will not admit unreasonably prejudicial or confusing facts and will instruct the jury on the law of ...

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